The Oscars Files Another Suit Against Godaddy Under ACPA Alleging Continued Violations

The Academy of Motion Picture Arts and Sciences which hands out the Oscars has filed anther lawsuit against Godaddy under the Anticybersquatting Consumer Protection Act (“ACPA”).

This suit filed on Novmeber 15, 2013, “supplements a currently pending action between the same parties asserting the same theories of infringement under the ACPA and related state theories that was filed in May 2010, Case No. 2:20-cv-03738-ABC-CW”

This lawsuit names additional parked domain names that were not included in the 1st suit.

The lawsuit is basically about two kinds of domain parked pages one where the domain is resolved to a placeholder of a customer of Godaddy which had PPC ads in which Godaddy kept 100% of the revenue and and the second arising from Godaddy cash parking service which seems to operate like a traditional parking company where the owner of the domain receives a share of the PPC revenues.

The Academy of Motion Picture Arts and Sciences filed a lawsuit against Godaddy on the same grounds in 2010, Godaddy allegedly allowed additional domains to be parked but as placeholders and through the cashparking program.

“”GoDaddy has deliberately taken, infringed, diluted and/or otherwise used, without authorization, the Academy’s rights in the OSCAR®, OSCARS® and OSCAR NIGHT®, ACADEMY AWARD®, ACADEMY AWARDS® marks have done so through the registration, license, use, trafficking in, conversion, and monetization of Internet domain names that are identical to and/or
confusingly similar to the Academy’s Distinctive & Valuable Marks.

The infringing domains are “parked pages” that have no legitimate business purpose, display no substantive content, and are used exclusively for the display of revenue generating advertisements.

Defendant derives revenue each time an internet user is directed to an infringing parked II domain and an advertisement is “clicked.”

GoDaddy has been, or attempted I2 to, derive revenue from hundreds of such infringing parked domains which demonstrates its bad faith intent to profit from advertising on domain names that are identical to, or confusingly similar to, the Academy’s Distinctive & Valuable Marks.

Under GoDaddy’s “Parked Page Service”, GoDaddy will park the registrant’s page and place advertisements on the web page while GoDaddy is granted the right to collect and retain all revenue generated by the advertising.

GoDaddy’s registrant-customers do not share the revenue GoDaddy generates from parking their domain names.

Conservatively, GoDaddy has more than 500,000 customers in the State of California and earns revenue in excess of $35 million per year from those customers.

Defendant GoDaddy also utilizes a Cash Parking Program, to monetize parked domain names that are confusingly similar to distinctive, famous and valuable marks.
‘
The Cash Parking Program is a service GoDaddy offers to its customers that permits domain registrants to pay a fee to allow GoDaddy, through its advertising partner, to place ads on the registrant’s web

The revenue generated through this advertising is then split between the registrant, GoDaddy, and GoDaddy’s advertising partner.

GoDaddy has submitted a United States Patent Application for “Systems and Methods for Filtering Online Advertising Trademarks”.

The patent application recognizes the need for systems and methods to filter online advertisements containing third-party trademarks because an unscrupulous domain name registrant could attempt to gain financially by signing up for domain parking advertising using a trademarked domain name notwithstanding that the rightful trademark owners would not want their trademarks used by others to profit from their trademarks.

The patent application reflects both GoDaddy’s recognition of the need-and its ability- to protect against the very illegitimate activity and injury that it promotes and profits from.

GoDaddy knew it was harming trademark holders, such as the Academy, by monetizing domains utilizing their marks.

In fact, GoDaddy provided an example of such harmful activity in its Patent Application.

GoDaddy, as the authorized licensee of the registrants, has licensed, monetized, used and/or trafficked in at least the following domain names in its Parked Page Service, with bad faith intent to profit from the Distinctive & Valuable Marks of the Academy:

GoDaddy, as the authorized licensee of the registrants in the Cash Parking Program, has licensed, monetized, used and/or trafficked at least the following domain names, with bad intent to profit from the famous, Distinctive & Valuable Marks of the Academy:

Defendant GoDaddy has continued to permit the domain names listed in paragraphs 29 and 30 to be registered and parked, even though the Academy previously filed a virtually identical lawsuit against GoDaddy for this same conduct and has sent numerous cease-and-desist letters to GoDaddy, demanding that it stop “registering or using the Academy’s trademarks, or any colorable imitations thereof, as domain names”.

The Academy sent the numerous cease-and-desist letters to GoDaddy, and its registrants between August 1, 2007, and February 5, 2010 and filed a lawsuit on May 14, 2010.

Despite the foregoing, many of the domain names that were the subject of these cease-and-desist letters are strikingly similar or identical to the domain names that Defendant GoDaddy permitted to be registered and parked several
years later.

For example:

On July 6, 2009, the Academy sent GoDaddy.com, Inc. a cease-and-desist letter for ACADEMYAWARDSDVD.COM.

Despite that letter, Defendant GoDaddy later permitted OSCARDVD.COM to be registered and parked; and

On February 21, 2008, October 10, 2008, July 6, 2009, July 22,2009, and August 6, 2009, the Academy sent and GoDaddy.com, Inc. cease-and-desist letters for domain names that incorporated variations of Academy Awards with the term “winners.”

Despite those letters, GoDaddy later permitted ACADEMYAWARDS2011WINNERS to be registered and parked.

he ACPA applies not only to individuals and companies who register domain names, but also to:

(1) registrants of the Deceptive Domains;

(2) anyone who “uses” the domain name which is defined as the registrant or the “authorized licensee” of the registrants of the Deceptive Domains; and

(3) anyone who “traffics in” Deceptive Domains, which refers to anyone involved in any transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges f currency, and any other transfer for consideration or receipt in exchange for consideration, whether or not the person is the registrant of the Deceptive Domain.

The ACPA makes unlawful the use, licensing, pledging, trafficking in, or any other exchange of consideration for the use of the Deceptive Domain Names. Defendants’ conduct in monetizing the infringing domains, GoDaddy’s acts as alleged herein constitute the use of and trafficking in infringing Deceptive Domains, in violation of the ACPA with bad faith intent to profit from the Academy’s Distinctive & Valuable Marks.

GoDaddy’s acts as alleged herein constitute cyberpiracy, cybersquatting, and/or typosquatting (a form of cybersquatting based on typographical errors users may make in entering domain names into a web in violation of the ACPA.

The Acdemey is asking for damges of $100,000 per domain plus attorney fees and full restitution of money Defendants have unlawfully obtained, as well as compensatory damages as well as injunctive relief.””

About Michael Berkens

Michael Berkens, Esq. is the founder and Editor-in-Chief of TheDomains.com. Michael is also the co-founder of Worldwide Media Inc. which sold around 70K domain to Godaddy.com in December 2015 and now owns around 8K domain names . Michael was also one of the 5 Judges selected for the the Verisign 30th Anniversary .Com contest.

Comments

What I loath is when I see such crass statements by Complainants as, quote, “….the infringing domains are “parked pages” that have no legitimate business purpose…” End Quote. How dare they make such an arrogant sweeping statement when the USPTO and Govt bodies (trade mark registries) around the World have granted ,notably Google, hundreds of Trade Marks for such PPC “park pages” !. What they mean is, because the domain owner is not an arrogant large company they are not entitled to stray anywhere near anything that we happen to want and dont own. BOLLOCKS to that ,and that is exactly why I get trade marks and I also take UDRP’s decisions to Court.